A guide to the UPC and the UP - Flipbook - Page 179
11-32 Either party may, in supporting their claims, specify that evidence lies in the control of the
other party and can, either during the written procedure or in the interim procedure, apply
for an order that the other party produce that evidence or communicate information. 67
11-33 After further exchanges of written pleadings (the timeline of which differ according to the type
of action), the judge-rapporteur will inform the parties of the date on which he intends to close
the written procedure. 68 The procedure should have taken between five and nine months from
lodging the SoC to this point, depending on the type of action.
11-34 Either before or, more usually, as soon as practicable following the closure of the written
procedure, the panel will decide how to proceed under art.33(3) UPCA, that is, where a
counterclaim for revocation has been made in an infringement action. The options for the
panel are to:
– Proceed with both actions (in which case the judge-rapporteur is obliged to request the
allocation to the panel of a technically qualified judge) 69;
– Refer the counterclaim for revocation to the central division and either suspend or proceed
with the infringement action (the bifurcation option); or
– With the agreement of the parties, refer the whole case to the central division.
11-35 Where the decision is made by the local or regional division to bifurcate the action (the second
of the above three options), the panel must stay the infringement proceedings where there is
a high likelihood that the relevant claims of the patent will be held invalid in the revocation
proceedings. 70 If, having decided to bifurcate, the panel proceeds with the infringement
proceedings, the judge-rapporteur must liaise with the central division and the revocation
proceedings will be accelerated. 71 In this way, it is hoped to minimise what is referred to as
the injunction gap (i.e. the time following an infringement decision before a decision is made
on the patent’s validity).
Interim Procedure
11-36 The written procedure is followed by an interim procedure that may, where appropriate,
include an interim hearing with the parties 72 held by the judge-rapporteur. The interim
conference is held remotely by telephone or video conference where possible 73 but, if not,
it can also be held in person at the Court. 74
11-37 The interim procedure is a key part of the process for preparing the case for the oral hearing.
During the interim procedure the judge-rapporteur will complete all necessary preparations for
the oral hearing, such as identifying the main issues, determining the relevant facts in dispute
and establishing a schedule for the further progress of the proceedings including confirming
the date for the oral hearing. The judge-rapporteur may also issue orders regarding production
of further pleadings and evidence and will decide the value of the action for the purpose of
67
68
69
70
71
72
73
74
rr.190 and 191 RoP. Other means of obtaining evidence include orders to freeze assets, experiments and letters of request
(rr.200, 201 and 173 RoP).
r.35 RoP.
r.37(3) RoP.
r.37(4) RoP.
rr.37(5) and 40(b) RoP. Rr.75 and 76 RoP set out the procedure for where an infringement action is commenced in a local
division after either a revocation action or a DNI is already before the central division (arts 33(5) and (6) UPCA).
art.52(2) UPCA. See chapter 13 (Interim Procedure) for further detail.
r.105(1) RoP.
r.105(2) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 169
